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When preparing a patent application, it is important to understand the concepts of claiming strategy. A successful strategy involves including different types of claims - for example, method or process, as well as composition or article of manufacture. It also involves understanding what constitutes infringement.
Method claims are used when composition claims are not available, such as when the materials used or the product obtained are already known and only the method is novel. Even when a composition is rightfully claimed, however, method claims can provide a fall-back strategy in the event the claimed composition is later found to have been in the literature.
Liability for infringement can arise from direct infringement, contributory infringement or active inducement of infringement. Direct infringement of a method claim occurs when an infringer practices each of the steps of the method or their equivalents. If the method includes a series of steps and no single individual or entity has practiced all of the steps, the patent owner often turns to the theories of contributory infringement or inducement to infringe.
The strategic considerations of these different theories are demonstrated in a recent court decision involving PharmaStem Therapeutics and two of its patents involving stem cell technology. The inventions in both patents related to the cryopreservation and subsequent therapeutic use of hematopoietic stem cells....